Monday, 25 February 2013

On February 19th the Brazilian Third Chamber of the Superior Court of Justice (STJ) has unanimously decided to deny the appeal sought by the company holding the trade mark ‘ABSOLUT’. The company was trying to guarantee the recognition of its ‘well known’ mark as so, through the courts.

The decision ratifies the principle followed by the Brazilian Instituto Nacional da Propiedade Industrial (INPI) on this matter i.e. recognition as a ‘well known’ mark must be sought at the Office not the courts. Moreover, this practice can only be pursued in opposition proceeding against third party trade mark applications or as a defence in cases of cancellation (nullity) asked by other users.

This principle is established by Resolution 121/05 that regulates the procedures for the application of art 125 Law No. 9,279. Article 2 of Resolution 121/05 defines a ‘well known’ mark as the one that ‘enjoys an unchallenged authority, knowledge and prestige’ due to ‘its tradition and condition in the market’ as well as its ‘quality and reliability’. The name is ‘linked essentially to the good image of the products or services that applies, employing a strong magnetism’. The Resolution continues to establish that the special protection to ‘well known’ marks afforded by art. 125 Law 9,279 ought to be sough at INPI and only through an indirect action in administrative procedures e.g., as a matter of defence or opposition.

The decision contributes, according to INPI, to increase legal certainty of the INPI’s actions.